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Free Webinar: Learning what the most successful companies do to overcome Alice rejections

On Wednesday, August 24, 2016, at 2pm ET, I will be hosting a free webinar discussion on how to overcome Alice rejections. Joining me will be JiNan Glasgow of Neopatents. CLICK HERE to REGISTER.

JiNan and I will discuss the companies that are most successful at overcoming Alice rejections and what they are doing to be successful. We will also provide an update on secondary review and the off-the-record advice we received from an examiner in a 3600 art unit.

Among other things we will discuss the following charts:

Topics to be covered in this free webinar will include:

Most successful companies at overcoming Alice rejections

What these companies are doing to be so successful

Off-the-record tips from an examiner in 3600

Can’t make the webinar? Register anyway and a copy of the webinar will be sent to your email address.

The Author

Gene Quinn
is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. Gene is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 8 Comments comments.

Amy RessingAugust 22, 2016 10:08 am

Do you have a link to the registration that does not begin with bit.ly? My organization blocks all those links. Thanks!

Is there any way to register with a gmail account? I don’t have another business email address, but would like to join the webinar. Thanks!

Wayne HoweAugust 24, 2016 10:46 pm

Gene, I had some other commitments, so wasn’t able to attend the webinar. Is there any way I can listen to the recorded discussion?

Gene QuinnAugust 25, 2016 11:13 am

Wayne-

Once the webinar is available for download you will be able to use the links available on this page to access the content. It should be uploaded to the “registration page” within the next couple days. I’d check back next week.

Thanks!

-Gene

AnonAugust 25, 2016 2:15 pm

Gene,

Enjoyed the Webinar (even if I was only able to listen in), but two flags were raised in my mind:

1) The female presenter’s advice of “tie to a technological field” – this will not survive “Supreme Court scrutiny,” as they have already indicated that a mere “field of technology” indication will not save a “Gisted” claim from being found abstract, and

2) your parting comment concerning “but software is really a method” – I think that you have been able to see my points on how the Court really is finding non-method inventions “Abstract” (no matter how odd that may be), but I would again caution against portraying the invention “really as a method,” mainly because those that are anti-patent take this as a misconception (instead of a nuanced view), and run with that misconception as if there really is NO other way of looking (or claiming) of software but as a method. And that is simply wrong, and simply is an attempt to not give proper protection to manufactures and machines improved with the addition of manufactures.

There are just too many people only too willing to dissemble and obscure the difference between the easiest way of describing on object with the action words of what that object – when put into execution – does. But it should be plainly clear that an invention can BE the object (as claimed) OR can be the execution (a true process) – (again, as claimed). It should be reiterated that Congress provided NOT for the courts to define an invention, but for the applicant. We should not be in a hurry to help the Court employ its illicit rewriting of the words of Congress with its “Gist/Abstract” technique by confusing ourselves that “software is a method.”

Gene QuinnAugust 25, 2016 3:48 pm

Anon-

Thanks for joining us on the webinar.

With respect to my comment that software is really a method, what I was trying to say is that if everyone was going to be intellectually honest the best way to describe software is as a method. Of course, as you point out, those in the anti-patent community are anything but honest. Judges also don’t understand software, so it is easy for them to be confused, which is only helped when the attorneys arguing cases don’t understand software and erroneously admit that it can be created by a second year engineering student over a weekend at a coffee shop.

That is why I always suggest staying away from method claims, at least for now. Perhaps I was too rushed to fully make my point at the end, but I just think method claims unnecessarily risk contaminating the entire application (or issued patent). I have no problem with writing a specification that will support making method claims, but if you want method claims I’d pursue them in a separate patent. Even then I’d be careful. I’d use system claims, and claims to devices, I’ve been talking for several years now about sprinkling in means-plus function, and one person in the webinar audience brought up Jepson claims to take advantage of language in Enfish, which I think is a very good idea. Of course, none of these should be exclusively used. We don’t know what will survive ultimately, so different claim techniques seem to be mandatory.

So I agree with you. When I talk about method claims contaminating the patent/application I’m saying the same thing you are (I think) when you talk about dissembling and obscuring differences.

As for what JiNan said about tying the invention to a technical field, if what she meant was just nebulously tying the invention to a certain technical field then again I agree with you. I’m not sure that is what she was saying. Perhaps that was what she was saying and perhaps she has had success getting patents through doing that. But like you I’d be skeptical about whether patents with a nebulous tie to a technology field would survive scrutiny. I suspect, however, she was referring to much more detailed tying to a technical field, more of what we here generally refer to as tying the invention to a technological embodiment in order to hit the European standard. Not that should be the way US law is interpreted, but it seems the European standard is the de facto standard used by at least some (perhaps many) decision makers.

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